USPTO Patents Application 10791063

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCICET NO.

CONFIRMATION NO.

10/791,063

03/02/2004

Leon Neal Cook

DC4882DIV1

2852

7590 05/02/2006

Dow Corning Corporation
Intellectual Property Department-Co 1232
P.O. Box 994

Midland, MI 48686-0994

EXAMINER

ZIMMER, MARC S

ART UNIT

PAPER NUMBER

1712

DATE MAILED: 05/02/2006

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Office Action Summary

Application No.

10/791,063

Applicant(s)

COOK ET AL.

Examiner

Marc S. Zimmer

Art Unit
1712

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 ® Responsive to communication(s) filed on 02 March 2004 .
2a)D This action is FINAL. 2b)S This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1 and 2 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) Q Claim(s) is/are allowed.

6) ^ Claim(s) 1 and 2 is/are rejected.

7) D Claim(s) is/are objected to.

8) Q Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) Q The specification is objected to by the Examiner.

10)D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
1 1 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-1 52.

Priority under 35 U.S.C. § 119

12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

2. D Certified copies of the priority documents have been received in Application No. .

3. Q Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) ^ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) ^ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5) □ Notice of Informal Patent Application (PTO-152)

Paper No(s)/Mail Date 07/02/04 . 6) □ Other: .

U.S. Patent and Trademark Office " " ~" ' ~~ ~ ' *~ ~~

PTOL-326 (Rev. 7-05) Office Action Summary Part of Paper No./Mail Date 20060428

Application/Control Number: 1 0/791 ,063 Page 2

Art Unit: 1712

Claim Analysis

It shall be noted for the record that, though Applicant's entire Specification is
directed to the formation of copolymers employing a hydrosilylation technique involving
hydrosilyl group-functionalized polysiloxane and organic small molecules containing
alkenyl moieties in the presence of a chain-terminating agent featuring only one alkenyl
group, the claims contemplate an invention substantially broader in scope. In fact, the
claim recites simply a method of making the stated copolymer wherein either (i) the
terminating agent reacts in situ with some fraction of the monomer materials, either
organosilicon(e) monomer/macromonomer, or the organic monomer, or both, or (ii) a
chain terminating agent is reacted with a fraction of one or both of the monomers prior
to carrying out the polymerization.

The phrase "processed as to chain terminators" according to claim 12 can also
refer to an operation whereby the monomers are purified to remove all sources of chain
terminating species prior to their copolymerization. Accordingly the claim also
contemplates a process for preparing a silicone-organic copolymer of unspecified
structure wherein the monomers are subject to purification. The absence of chain
terminators, of course, allows the practitioner to obtain polymers of higher molecular
weight than would be realized were the chain terminators not to be removed.

Claim Rejections - 35 USC § 102

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
form the basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless -

Application/Control Number: 1 0/791 ,063 Page 3

Art Unit: 1712

(b) the invention was patented or described in a printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to the date of application for patent in the United
States.

(e) the invention was described in (1) an application for patent, published under section 122(b), by
another filed in the United States before the invention by the applicant for patent or (2) a patent
granted on an application for patent by another filed in the United States before the invention by the
applicant for patent, except that an international application filed under the treaty defined in section
351(a) shall have the effects for purposes of this subsection of an application filed in the United States
only if the international application designated the United States and was published under Article 21(2)
of such treaty in the English language.

Claim 1 is rejected under 35 U.S.C. 102(b) as being anticipated by Austin et al.,
U.S. patent # 6,448,361 . This reference discloses the continuous manufacture of
silicone copolymers wherein the reactants are a hydrogensiloxane and an olefinically-
substituted material (column 2, lines 31-36). A preferred embodiment of the latter is a
polyoxyalkylene that, in one instance may be terminated at both ends with an
unsaturated monovalent hydrocarbon so as to prepare an (AB) n type copolymer. See
the paragraph bridging columns 3 and 4. Relevant to the present discussion, it is
contemplated that the reactants are purified and dried prior to use (column 4, lines 45-
46). One of ordinary skill would expect that any chain-terminating species would
inherently be removed during the purification stage.

Claim 1 is rejected under 35 U.S.C. 102(b) as being anticipated by Szycher et al.,
U.S. Patent # 5,863,627. This reference discloses the preparation of polycarbonate-
polyurethane-polysiloxane terpolymers. The starting materials outlined in column 2,
lines 17-30 include sources of polysiloxane, polycarbonate, and urethane linkages but
also alcohol or amine chain terminators.

Claim 1 is rejected under 35 U.S.C. 102(b) as being anticipated by Sachdev et
al., U.S. patent # 5,773,561. Sachdev teaches the preparation of polyimide-siloxane
copolymers derived from an aminoalkyl-terminated polydiorganosiloxane and an

Application/Control Number: 1 0/791 ,063 Page 4

Art Unit: 1712

aromatic dianhydride. Relevant to the present discussion, it is contemplated it column
6, lines 38-41 that a monoanhydride chain terminator may be added to the
polymerization system for molecular weight control.

Claims 1 and 2 are rejected under 35 U.S.C. 102(e) as being anticipated by
Sadvary et al., U.S. patent Application Publication No. 2001/0039324. Sadvary easily
represents the most germane prior art for its disclosure of a chain extended organic
polysiloxane prepared using a synthetic strategy that essentially mirrors that disclosed
by Applicant. In particular, Sadvary describes the preparation of a chain extended
polymer that entails reacting a polysiloxane adhering to the structure presented in
paragraph 15 with an organic compound having two or more alkenyl moieties that are
reactive with the hydrosilyl groups of the polysiloxane. In paragraph 22, it is
contemplated that chain terminators in the form of allyl/vinyl ether compounds or
styrene may be added. Paragraphs 23 and 24 contemplate adding the chain terminator
to the polymerization system thereby permitting it to react with the siloxane component
in situ or, alternatively, reacting a portion of the siloxane polymer bearing hydrosilyl
groups with the chain terminator prior to adding the monomer containing two
unsaturated moieties. Embodiments of both the polysiloxane and the organic monomer
are provided in paragraphs 27-29. Notably, it is stated in paragraph 28 that the organic
monomer may be a source of urea or urethane linkages.

Application/Control Number: 10/791,063

Page 5

Art Unit: 1712

The above references are but a representative sampling of those that teach the
utilization of chain terminators, or their removal, as an element of a polysiloxane-organic
copolymer preparation process. The others are not cited herein for brevity.

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Marc S. Zimmer whose telephone number is 571-272-
1096. The examiner can normally be reached on Monday-Friday 8:00-4:30.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Randy Gulakowski can be reached on 571-272-1302. The fax phone
number for the organization where this application or proceeding is assigned is 571-
273-8300.

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April 28, 2006 . A